1. DART INDUSTRIES INC 2. (No. Syarikat: 287324-M) 1. CMN INTERNATIONAL SDN BHD (No. Syarikat: 1181309-W) 2. NG YAN SWAN (No. KP: 740518-08-6376) 3. NURRAIDAH BINTI RAZALI (No KP: 821012-14-5038) 1. CMN INTERNATIONAL SDN. BHD (No. Syakikat:

1. DART INDUSTRIES INC 2. (No. Syarikat: 287324-M) 1. CMN INTERNATIONAL SDN BHD (No. Syarikat: 1181309-W) 2. NG YAN SWAN (No. KP: 740518-08-6376) 3. NURRAIDAH BINTI RAZALI (No KP: 821012-14-5038) 1. CMN INTERNATIONAL SDN. BHD (No. Syakikat:

The Court of Appeal affirmed the High Court that the Biolife Borneo Bottle infringed RID 167 as an obvious imitation (not a fraudulent imitation) after applying visual comparison and established tests; but set aside the High Court's finding that the 2nd Plaintiff lacked locus and held that an exclusive sub-licensee has standing under s.33(4) IDA (first limb) and the procedural second limb does not apply where the owner is a co-plaintiff; appeals by 1st Plaintiff and Defendants dismissed and 2nd Plaintiff's appeal allowed with costs.

Citation
W-02(IPCV)(W)-1810-09/2018 (Mahkamah Rayuan)
Parties
Appellant/respondent: CMN International Sdn Bhd; Appellant/respondent: Ng Yang Swan; Appellant/respondent: Nurraidah Binti Razali; Appellant/respondent: Azrul Bin Samat; Appellant/respondent: Tai Yang Thing; Respondent/appellant: Dart Industries Inc.; Appellant/respondent: Tupperware Brands Malaysia Sdn Bhd
Court
IPCV
Jurisdiction
Malaysia
Judgment Date
3 July 2020
Case Number
W-02(IPCV)(W)-1810-09/2018 (Mahkamah Rayuan)
Procedural Posture
Civil Appeal (design Infringement) / Court of Appeal Judgment Delivered 3 July 2020
Outcome
Appeals dismissed in part and allowed in part: 1st Plaintiff's and Defendants' appeals dismissed; 2nd Plaintiff's appeal allowed
Legal Topics
Registered Design Infringement, Locus Standi of Licensee/sub Licensee, Obvious Imitation, Fraudulent Imitation, Interpretation of Statute S.33(4) IDA, Costs
Source Language
Malay/English

Case Brief

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Parties

CMN International Sdn Bhd

Appellant/respondent

Ng Yang Swan

Appellant/respondent

Nurraidah Binti Razali

Appellant/respondent

Azrul Bin Samat

Appellant/respondent

Tai Yang Thing

Appellant/respondent

Dart Industries Inc.

Respondent/appellant

Tupperware Brands Malaysia Sdn Bhd

Appellant/respondent

Procedural Posture

Civil Appeal (design Infringement) / Court of Appeal Judgment Delivered 3 July 2020

  1. 1 Whether the 2nd Plaintiff (exclusive sub-licensee) had locus standi to sue under s.33(4) Industrial Designs Act 1996
  2. 2 Whether the Biolife Borneo Bottle infringed Registered Design No MY-09-00167-0101 (RID 167) as an obvious or fraudulent imitation
  3. 3 Proper construction and application of the two limbs of s.33(4) IDA and effect of licence/sub-licence agreements

Ratio Decidendi

The Court of Appeal affirmed the High Court that the Biolife Borneo Bottle infringed RID 167 as an obvious imitation (not a fraudulent imitation) after applying visual comparison and established tests; but set aside the High Court's finding that the 2nd Plaintiff lacked locus and held that an exclusive sub-licensee has standing under s.33(4) IDA (first limb) and the procedural second limb does not apply where the owner is a co-plaintiff; appeals by 1st Plaintiff and Defendants dismissed and 2nd Plaintiff's appeal allowed with costs.

Court Disposition

Appeals dismissed in part and allowed in part: 1st Plaintiff's and Defendants' appeals dismissed; 2nd Plaintiff's appeal allowed

Orders

  • Affirmed High Court finding that the Biolife Borneo Bottle infringed RID 167 by obvious imitation and was not a fraudulent imitation
  • Set aside High Court finding that 2nd Plaintiff had no locus to sue; held 2nd Plaintiff has locus as exclusive sub-licensee under s.33(4) IDA